DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Nature of the Invention:
The claimed invention is directed to a crystallization-based chemical purification process for separating and enriching acetic acid from aqueous mixtures containing multiple short-chain carboxylic acids.
Breadth of the Claims:
Claim 1 broadly recites a process for enriching acetic acid from an aqueous acetic acid mixture containing at least 50 wt.% acetic acid and secondary constituents selected from formic acid, propionic acid, and butyric acid, wherein the process includes crystallization at 1°C to 25°C below the concentration-dependent liquidus temperature, followed by either mechanical removal of the crystalline phase or partial remelting and mechanical removal of the remaining crystalline phase. Claims 2-8 further broaden or elaborate the scope by reciting multiple alternative lower concentration thresholds, impurity ranges, cooling offsets, cooling times, separation methods, and repeated stages.
Amount of Guidance Presented by Inventor:
The specification must teach one of ordinary skill in the art how to practice the full scope of the claimed invention without undue experimentation. Here, the specification describes the general process concept and certain preferred conditions, but it does not provide a sufficient framework for determining, across the full claimed range, which feed mixtures will operate successfully, what degree of supercooling is necessary, how long cooling must be maintained, or when direct separation will suffice as opposed to partial remelting.
Existence of Working Examples:
The working examples are not commensurate with the scope of the claims. The specification identifies an advantageous starting mixture in paragraph [0046] as containing 70% to 90% by weight acetic acid, 1% to 5% by weight formic acid, 1% to 5% by weight water, 1% to 5% by weight propionic acid, and 1% to 5% by weight butyric acid. This is materially narrower than the full scope of claim 1, particularly the lower end beginning at 50 wt.% acetic acid. The specification does not provide representative working examples spanning the full claimed concentration range or the full variety of impurity combinations encompassed by the claims.
State of the Prior Art:
The prior art is not shown to provide a settled and predictable framework that would fill the gaps in the disclosure. Rather, the specification indicates that success depends on the concentrations and proportions of the individual components, such that general background knowledge would not by itself permit the skilled artisan to practice the full claimed scope.
The Level of One of Ordinary Skill:
While one of ordinary skill in the art may possess general knowledge concerning crystallization techniques, such ordinary skill does not cure the absence of enabling disclosure where the application itself teaches that the relevant system is unpredictable and composition-dependent.
The Level of Predictability in the Art:
Paragraph [0041] states that the crystallization behavior of such mixtures is unpredictable because of dimer formation and because the melting temperature or liquidus temperature depends on the concentrations of the individual components. Paragraph [0045] further states that the degree of supercooling depends on the proportions of the secondary components, that supercooling time influences yield, and that at certain crystalline-phase to liquid-phase ratios inclusions of liquid may occur such that the phases cannot be separated without additional treatment. These disclosures establish that the art is composition-sensitive and unpredictable.
Quantity of Experimentation Needed:
Because the art is unpredictable, a greater degree of guidance and a greater number of representative examples are required to satisfy the enablement requirement. Such disclosure is not present here. A person of ordinary skill in the art would need to engage in extensive trial-and-error experimentation throughout the full claim scope to determine which compositions are operable, what cooling offset is appropriate for each composition, what cooling time is necessary, whether crystalline and liquid phases can be separated directly, and when partial remelting is required to obtain successful separation.
In view of the breadth of the claims, the limited guidance in the specification, the lack of representative examples commensurate with the breadth claimed, the unpredictability of the art, and the substantial amount of experimentation required to identify operable embodiments throughout the claim scope, undue experimentation would be required to practice the full scope of the invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rendered indefinite and unclear because it is unclear whether steps (b) and (c) are mutually exclusive alternatives, whether both steps are required, and, if both are required, in what order they are performed. Step (c) further recites removing a residual crystalline phase “from the liquid phase,” even though step (b) already recites mechanically removing the crystalline phase from the liquid phase. Rendering the metes and bounds of claim 1 not clear.
Claim 8 is indefinite because it is unclear what specific process step or combination of steps is required to be repeated. Claim 8 refers to repetition of steps “(a), (b) or (c)” of the base claim, but does not clearly recite whether the entire process cycle must be repeated, whether only one of the recited steps is repeated, or whether step (a) together with either step (b) or step (c) is repeated as a sequence. Because the base claim already recites alternative process paths in steps (b) and (c), claim 8 does not clearly define whether repetition is limited to the originally selected alternative or whether the repeated stage may employ a different alternative.
Claims which depend from an indefinite claim are also indefinite.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -6:30 pm).
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/DEBORAH D CARR/Primary Examiner, Art Unit 1691